Los Verdes III, LLC

Trademark Trial and Appeal Board

Sep 4, 2003

No. 78043560 (T.T.A.B. Sep. 4, 2003)

Mailed:
September 4, 2003
Paper No. 10
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Los Verdes III, LLC
________
Serial No. 78/043,560
_______
Melissa R. Kauffman and Barbara Weil Laff of Ireland
Stapleton Pryor & Pascoe, P.C. for Los Verdes III, LLC.
Howard Smiga, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney).
_______
Before Bucher, Rogers and Drost, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Los Verdes III, LLC seeks registration on the
Principal Register for the mark CHERRY CREEK COUNTRY CLUB
for goods and services placed in four classes, as follows:
“Printed matter, namely score cards, playing
cards, note cards, and golf yardage books,” in
International Class 16;
“Clothing, namely shirts, hats, t-shirts,” in
International Class 25;
“Golf Accessories, namely golf bags, golf tees, and
golf towels,” in International Class 28; and
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 78/043,560
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“Golf courses, golf club services, golf
tournaments, instruction in the field of golf,” in
International Class 41.1
The Trademark Examining Attorney has refused
registration under Section 2(e)(2) of the Trademark Act,
15 U.S.C. §1052(e)(2), on the ground that, when used in
connection with the identified goods and services specified
in the application, the mark is primarily geographically
descriptive of them.
As to the goods in International Class 25 only, the
Trademark Examining Attorney also has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when applied to applicant’s goods in
International Class 25, so resembles the mark “CHERRY CREEK
and design” as shown below:
1 Application Serial No. 78/043,560 was filed on January 17,
2001 based upon applicant’s allegations of a bona fide intention
to use the mark in commerce. Applicant has since filed an
amendment to allege use as to the goods in International Class 25
and the services in International Class 41. Classes 16 and 28
remain based upon Intent-to-Use.
Serial No. 78/043,560
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registered for “clothing, namely, sport coats, blouses,
skirts, slacks, shirts, T-shirts, shoes, hats, jackets,
coats, dresses, scarves and belts,” also in International
Class 25,2 that it would be likely to cause confusion, to
cause mistake or to deceive.
When the examining attorney made both refusals to
register final, applicant filed a notice of appeal. Briefs
have been filed, but no oral hearing was requested.
We affirm the refusals to register.
Primarily Geographically Descriptive
Both applicant’s attorney and the Trademark Examining
Attorney agree that, in order for registration of a mark to
be properly refused on the ground that it is primarily
geographically descriptive of the applicant’s goods and/or
services, it is necessary to show that the mark sought to
be registered is the name of a place generally known to the
public, and that the public would make an association
between the named place and the goods and/or services; that
is, purchasers would believe that the services and the
goods for which the mark is sought to be registered
originate in that place. See In re Societe Generale des
2 Registration No. 2,176,521, issued on the Principal
Register on July 28, 1998. The registration states that the mark
is lined for the colors red and green, although color is not
claimed as a feature of the mark.
Serial No. 78/043,560
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Eaux Minerals de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450
(Fed. Cir. 1987); In re JT Tobacconists, 59 USPQ2d 1080
(TTAB 2001); and In re California Pizza Kitchen Inc., 10
USPQ2d 1704 (TTAB 1988). See also, In re Loew’s Theatres,
Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985).
Primary significance of “Cherry Creek”
Although applicant’s mark is CHERRY CREEK COUNTRY
CLUB, our primary focus under Section 2(e)(2) is on the
term “Cherry Creek,” because, as noted by the Trademark
Examining Attorney, the addition of generic and/or merely
descriptive words to a geographical term does not avoid the
refusal of primary geographical descriptiveness. See In re
U.S. Cargo Inc., 49 USPQ2d 1702 (TTAB 1998); In re
Cambridge Digital Systems, 1 USPQ2d 1659 (TTAB 1986); and
In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986).
The Trademark Examining Attorney contends that the
entire record (e.g., the evidence provided by the Trademark
Examining Attorney as well as evidence provided by the
applicant) supports the fact that CHERRY CREEK identifies a
real and significant (i.e., not obscure) geographic
location, and that the primary meaning of the mark CHERRY
CREEK COUNTRY CLUB is its geographic meaning.
Serial No. 78/043,560
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While applicant acknowledges that Cherry Creek flows
through Denver,3 applicant emphasizes that “the creek does
not run through the Country Club.” (Applicant’s response
of December 4, 2001). However, the Trademark Examining
Attorney placed maps into the record showing that the banks
of Cherry Creek form the southwest border of applicant’s
golf course and country club. In fact, applicant’s
membership brochure notes that its exclusive, private
country club is “nestled between Cherry Creek and the
historic Highline Canal.” Hence, applicant’s golf course
and related services, as well as the club house and gift
shop which will presumably be selling the listed goods,
will all be located next to Cherry Creek.
Under the case law, it is clearly the perception of
the relevant public as to the geographical significance of
the mark that is ultimately controlling. We must determine
whether the Trademark Examining Attorney has made a prima
facie case that the relevant public will perceive the
primary significance of CHERRY CREEK COUNTRY CLUB to be
geographic.
3 We take judicial notice of the fact that Denver is the
largest city in Colorado (1990 population of 467,610) and the
financial, administrative and transportation center of the Rocky
Mountain region. Denver is located on the South Platte River at
the mouth of Cherry Creek. The Columbia Gazetteer of North
America, ©2000.
Serial No. 78/043,560
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The initial Trademark Examining Attorney conducted a
NEXIS search [“CHERRY CREEK” W/3 COLORADO] and got 1422
hits while the current Trademark Examining Attorney
conducted his own NEXIS search [“CHERRY CREEK” and DENVER]
and got 22,916 hits. According to the more than two-dozen
NEXIS stories placed into the record by the Trademark
Examining Attorney, the most frequent occurrences of the
term in the Denver media are references to the neighborhood
that derived its name from the body of water, and its
associated school districts and shopping venues. Of the
stories placed in the record, only one story made reference
to the creek itself while two others named Denver landmarks
closely associated with the creek:
“Goldstein points out that, unlike most major
American cities, downtown [Denver] is not laid out
on a north-south grid. It’s cocked slightly,
lined up with Cherry Creek and the South Platt
River. So Northwest is really north.”
The Denver Post, March 11, 2002.
“She tried the trapeze because she was afraid of
heights. ‘You’re talking to a woman who doesn’t
drive across Cherry Creek Dam,’ she says.”
Rocky Mountain News, March 8, 2002.
“In December and January, project officials
relocated 100 prairie dogs from two colonies along
I-25 and I-225 to Cherry Creek State Park after
getting permission from Arapahoe County….”
The Denver Post, March 7, 2002.
We conclude that over the years, the creek name has
been incorporated into a variety of related place names.
Serial No. 78/043,560
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It is obvious from the sheer volume of stories that “Cherry
Creek” – the neighborhood, the school sports teams, the
shopping venues, and, yes, the namesake body of water4 – is
generally known to the public.
However, apart from any disagreement over applicant’s
geographical proximity to the body of water, applicant
places a great deal of emphasis on the fact that Cherry
Creek has given its name to an upscale neighborhood located
in Denver, seven miles away from the country club. The
village of Cherry Creek has upscale department stores,
boutiques, art galleries, salons, fine restaurants, cafes,
nightspots and other entertainment, etc. Accordingly,
applicant argues “that the term ‘Cherry Creek’ has a
meaning other than the body of water that runs through
Denver. In fact, ‘Cherry Creek’ is used throughout the
state to connote abundance and wealth ….” (Applicant’s
reply brief, p. 1).
Applicant argues that this case is analogous to the
Board’s earlier finding that in light of the prominent,
significant meaning of the term HOLLYWOOD as referring to
4 The Gazetteer entry for Cherry Creek also supports this
conclusion. Cherry Creek is 64 miles long, flowing north to the
South Platte River. Cherry Creek Dam (140 feet high and 14,300
feet long) forms Cherry Creek Lake, the lake located within
Cherry Creek State Park. The Columbia Gazetteer of North
America, ©2000. (The Gazetteer makes no mention of a Cherry
Creek village in Denver.)
Serial No. 78/043,560
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the nation’s entertainment industry in general, the Office
had not established that the primary significance of the
term “Hollywood” is that of a geographic location in Los
Angeles. In re International Taste Inc. 53 USPQ2d 1604
(TTAB 2000).
We find that the Trademark Examining Attorney has
established that “Cherry Creek” is a real and significant
geographic location in Colorado. On the other hand, unlike
the applicant in the HOLLYWOOD case, we find that applicant
has failed to rebut the prima facie showing that the
primary meaning of the mark is the geographic meaning. By
contrast with a record showing that HOLLYWOOD has come to
be a shorthand reference to the American film industry, on
this record, we cannot determine that the primary
connotation of the name “Cherry Creek” is, as applicant
contends, luxury and quality. For even if the record were
to convince us that “Cherry Creek” has a widely-shared
connotation of luxury and quality (which it has not), the
mere fact that these other connotations may have been added
to this designation does not necessarily alter the primacy
of its geographical significance. See In re Opryland USA
Inc., 1 USPQ2d 1409 (TTAB 1986).
Serial No. 78/043,560
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Goods/place association
As to this second prong of the test under Section
2(e)(2) of the Act, applicant analogizes the instant case
to reported decisions involving two street names applied as
marks to perfume – SUNSET BOULEVARD and RODEO DRIVE.5 In
similar fashion, applicant argues that the Trademark
Examining Attorney has failed to show “that the term
‘Cherry Creek’ is associated with golf course
communities …” (applicant’s appeal brief, p. 5).
We find that this case can be distinguished from the
facts of Jacques Bernier and Gale Hayman. In these cases,
the issue was whether the record supported a conclusion
that purchasers would believe these two named streets in
Southern California were places associated with the
production and/or sale of perfume. The issue herein is
whether prospective consumers would believe that Cherry
Creek might provide a setting for services recited as “Golf
courses, golf club services, golf tournaments, instruction
5 “Nothing in the record, however, indicates or even suggests
that purchasers would believe that Sunset Boulevard was the place
of manufacture or production of the perfume and cologne. Indeed,
there is no indication that any perfume or cologne is
manufactured or produced on Sunset Boulevard. See In re Jacques
Bernier, Inc., 894 F.2d 389, 13 USPQ2d 1725 (Fed. Cir. 1990)
[RODEO DRIVE not primarily geographically deceptively
misdescriptive when applied to applicant's perfume]. Nor is
there any evidence that applicant's goods are even sold on Sunset
Boulevard.” In re Gale Hayman Inc. 15 USPQ2d 1478 (TTAB 1990).
Serial No. 78/043,560
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in the field of golf,” as well as the collateral products
listed above. Applicant’s membership brochure describes
its 18-hole championship golf course designed by Jack
Nicklaus as being next to Cherry Creek. Hence, prospective
purchasers who are acquainted with the Denver area will
assume that these golfing services are being produced in
the vicinity of Cherry Creek. According to the membership
brochure and applicant’s arguments herein, the club’s
25,000 square foot clubhouse will have a gift shop selling
souvenir products bearing the club’s name. Therefore, we
find that members of the relevant public, which includes
golfers among the substantial Denver area population, would
make a services/place and goods/place association herein.
Hence, the refusal of registration as to all four classes
of goods and services is hereby affirmed.
Likelihood of confusion
Applicant argues that the registrant’s clothing items
consist of colorful and patterned prints for plus-sized
women, while its own items of clothing are souvenir sports
wear in standard sizes; that registrant’s mark with its
depiction of cherries is a product mark for a line of
clothing, while its mark connotes a golf course having
souvenir sports wear; and that registrant’s goods will be
Serial No. 78/043,560
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sold in retail stores, while its sports wear will be sold
in its own golf club gift shop.
By contrast, the Trademark Examining Attorney argues
that the dominant feature of both marks, CHERRY CREEK, is
identical; that “shirts, hats and T-shirts” are listed in
both the cited registration and the instant application;
and that there are no restrictions in either registrant’s
or applicant’s channels of trade.
In the course of considering this refusal, we have
followed the guidance of In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973).
This case sets forth the factors, which if relevant
evidence is of record, must be considered in determining
likelihood of confusion. In any likelihood of confusion
analysis, two key factors are the similarities between the
marks and the similarities between the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976).
We turn first to an examination of the goods. As
noted by the Trademark Examining Attorney, some of the
clothing items identified in the application and
registration are identical (e.g., shirts, hats and T-
shirts). Yet applicant’s attorney has argued that based
upon her own investigation of registrant’s goods, the
Serial No. 78/043,560
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respective goods are clearly different. However, we agree
with the Trademark Examining Attorney that despite what may
have been revealed about registrant’s products or channels
of trade by way of applicant’s counsel’s telephone inquiry
of registrant, there is no limitation in the identification
of goods in the cited registration. Nor is there a
limitation in applicant’s identification of goods. Hence,
we must presume that registrant’s and applicant’s goods,
including some of which are legally identical, will travel
in the same channels of trade to the same classes of
ordinary consumers.
Turning then to the marks, as our principal reviewing
court, the Court of Appeals for the Federal Circuit, has
pointed out, “[w]hen marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992). The design feature included in registrant’s mark
does create a somewhat different appearance in the marks,
but it is the literal elements that are dominant as this is
the way consumers will call for the goods in the
marketplace. While applicant’s mark also includes the term
COUNTRY CLUB, this terminology for collateral and/or
Serial No. 78/043,560
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souvenir items for golfing must also be seen as less
significant than the words CHERRY CREEK. That is, when
viewed in their entireties, the two marks are quite similar
as to sound and appearance. As to meaning, the connotation
of applicant’s mark and of registrant’s mark is the same –
namely, of a place known as “Cherry Creek.” Accordingly,
we find that the two marks create very similar overall
commercial impressions.
In conclusion, given confusingly similar marks applied
to legally identical goods, we find there is a likelihood
of confusion among consumers, when the involved marks are
used on or in connection with the identified goods listed
in International Class 25.
Decision: The refusals to register are hereby
affirmed.